DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Drawings
Applicant is requested to submit formal drawings of better quality (similar to the one provided in the parent application SN 17/577,261) in which all lines and numbers are sufficiently dark and well defined.
The lines and numbers in the current drawings are faded and will not reproduce well in the published patent.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s).
See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 21-49 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-29 of U.S. Patent No. US 12157543 B2 (‘543).
Although the claims at issue are not identical, they are not patentably distinct from each other because all limitations of current claims are encompassed within claims 1-29 of the ‘543 Patent. Specifically, independent claims 21, 35 and 49 of the application recite “one or more suction cup assemblies”, which is a broader limitation than, and encompassed within, the “two or more suction cup assemblies” limitation set forth in independent claims 1, 15 and 29 of the ‘543 Patent. Further, the dependent claims from respective claims 21 and 35 of the application are identical to the dependent claims from independent claims 1 and 15 of the ‘543 Patent.
Specification
The amendment filed 3/25/2025 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows:
In ¶0013, the text – The rotational adjustment of the deflector relative to the elongated base may be between about 0° to about 22.50° in either direction. The rotational adjustment of the deflector relative to the elongated base may provide a total range of rotational motion of about 45° – is considered to be new matter.
Note: As a result of new matter inclusion, the specification amendment filed 3/25/2025 has NOT been entered. Applicant is requested to resubmit the specification amendment without any new matter in the response to this Office Action.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 24-25 and 38-39 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 24, 38 and 39 set forth a rotational adjustment of the deflector face relative to the elongated base being between about 0° to about 22.50° in either direction, and claims 25 and 39 further set forth such rotational adjustment having a total range of rotational motion of up to about 45°. However, it is noted that the claimed subject matter is not supported in the specification, as originally filed.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 48 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In claim 48, the limitations “the first concentrically-shaped configuration” and “the second concentrically-shaped configuration” (emphasis added) lacks proper antecedent basis, thereby rendering the claim indefinite.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim 21-26, 30, 35-39, 42-43 and 49 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Thompson (US 11,524,751 B2).
Thompson discloses a water flow deflection device (see Fig 1 and Fig 2) configured to be attached to a side of a watercraft, comprising: an elongated base [18] with a first end and a second end, the elongated base configured to be aligned along the side of the watercraft when the water flow deflection device is attached to the watercraft, and the elongated base having a deflector interface; a deflector assembly [26] operably attached to the base between the first and second ends of the elongated base, the deflector assembly comprising a deflector face spanning between a leading end and an opposing trailing end, the leading end being in closer proximity to the watercraft than the trailing end during operational use on the watercraft, the deflector face having a surface area configured to deflect water, and the deflector assembly comprising a base interface; and one or more suction cup assemblies [48] (see col. 10, line 67 through col. 11, line 5) operably engaged with the elongated base to provide removable attachment of the elongated base to the side of the watercraft, wherein the one or more suction cup assemblies having an attachment point with the elongated base located between the first and second ends of the elongated base; wherein the deflector interface and the base interface are operably coupled and configured to allow a rotational adjustment of the deflector face through 360° relative to the elongated base to be placed in various orientations (see the abstract; Fig 3 a-c; and col. 7, lines 49-66).
Re claims 22-23 and 36-37, because the deflector can be rotated to be placed in various orientations, the rotational adjustment of the deflector face relative to the elongated base can be between about 0° to about 30° in either direction, thereby providing a total range of rotational motion of up to about 60°.
Re claims 24-25 and 36-39, because the deflector can be rotated to be placed in various orientations, the rotational adjustment of the deflector face relative to the elongated base can be between about 0° to about 22.50° in either direction, thereby providing a total range of rotational motion of up to about 45°.
Re claims 26 and 43, an interface lock is provided for locking the deflector interface and base interface at a desired rotational position of the deflector face relative to the elongated base (see col. 7, lines 46-48).
Re claims 30 and 42, any protruding structure on the exposed side of the base, such as the lever to operate the suction, is capable of serving as rotational alignment guidance indicia proximately located the base interface or the deflector interface.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 31-34 and 44-47 are rejected under 35 U.S.C. 103 as being unpatentable over Thompson (US 11,524,751 B2) in view of Wilmoth et al. (US 9,834,280 B1).
Thompson discloses a water flow deflection device having a deflector, as described above. Thompson however is silent on the deflector face as having a textured surface (claims 31-32 and 44-45), or the deflector assembly comprising an extendible deflector slidably attached to a base deflector (claims 33-34 and 46-47).
Wilmoth et al. discloses a water flow deflection device having a deflector, wherein the deflector comprises an extendible deflector [142] slidably attached to a base deflector [140] (see Fig 5). The base deflector also comprises fasteners [168] to adjustably lock the extendible deflector relative to the base deflector between a retracted position, fully extended position and one or more intermediate extended positions, wherein the fastener head has recessed or concave indentation for tightening by a screwdriver (see Fig 5).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to provide the deflector of Thompson with an extendible deflector, as taught by Wilmoth et al. Having such modification would have allowed one to selectively adjust a surface area of the deflector, thereby selectively modifying the quality of the resulting wake. It is noted that with such a modification in place, the deflector face would also get a textured surface caused by the concave indentations of the fastener heads (as required by claims 31-32 and 44-45).
Allowable Subject Matter
Claims 27-29 and 40-41 are objected to as being dependent upon a rejected base claim, but would be allowable if (i) rewritten in independent form including all of the limitations of the base claim and any intervening claims, and (ii) a proper terminal disclaimer is provided to overcome the double patenting rejection set forth in this Office action.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Thompson (US 11,524,751 B2) discloses deflector attachment structures as being suction cups or magnets, thereby establishing an equivalence between the two attachment structures (see col. 11, lines 1-5)
McNaughton (US 10,183,726) shows a water flow deflection device wherein a deflector is rotational adjustable relative to a base (see Fig 20)
Spendlove (US 11,001,341) shows a water flow deflection device wherein a deflector is rotational adjustable relative to a base (see Fig 2)
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AJAY VASUDEVA whose telephone number is (571)272-6689. The examiner can normally be reached 6:00 am - 3:00 pm.
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/AJAY VASUDEVA/Primary Examiner, Art Unit 3615
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